SOLUTIA INC.

Patent Trials and Appeals Board

Jul 21, 2021

2020004417 (P.T.A.B. Jul. 21, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/728,736 10/10/2017 NANDAN U UKIDWE 86247US01 2794
66024 7590 07/21/2021
EASTMAN CHEMICAL COMPANY
200 SOUTH WILCOX DRIVE
KINGSPORT, TN 37660-5147
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/21/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
estiltner@eastman.com
jlmcglothlin@eastman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte NANDAN U. UKIDWE,
ARISTOTELIS KARAGIANNIS, PU ZHANG, and
YINONG MA
____________________

Appeal 2020-004417
Application 15/728,736
Technology Center 1700
____________________

Before JEFFREY T. SMITH, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–5 and 8–20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 In explaining our Decision, we refer to the Specification filed Oct. 10,
2017 (“Spec.”), the Final Office Action dated June 13, 2019 (“Final Act.”),
the Appeal Brief filed Nov. 13, 2019 (“Appeal Br.”), and the Examiner’s
Answer dated Jan. 24, 2020 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant(s)” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Eastman
Chemical Company. Appeal Br. 3.
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2
The subject matter on appeal relates to polymer resins and interlayers,
including those used in multiple layer panels, such as safety glass or
polymeric laminates. Spec. ¶¶ 1–2. According to the Specification, safety
glass is a transparent laminate that includes at least one polymer sheet, or
interlayer, disposed between two sheets of glass or other rigid substrate. Id.
¶ 3. The Specification states the selection of certain resin compositions and
compositions of those resins with various types and amounts of plasticizers
can provide interlayers having different properties. Id. ¶ 4. The Specification
describes poly(vinyl butyral) (PVB) resins as often used in safety glass. Id.
¶ 2. The Specification describes tradeoffs between PVB having lower
residual hydroxyl contents and higher amounts of plasticizer, which exhibit
good vibration and sound dampening properties with limited, if any, impact
resistance over a broad temperature range, and PVB having higher residual
hydroxyl content and lower plasticizer content, which exhibit higher glass
transition temperatures for desirable safety performance application, but
very poor vibration dampening performance. Id. ¶ 5.
Independent claim 1 is representative of the claimed subject matter in
this Appeal.
1. A multiple layer interlayer comprising:
a first resin layer comprising a first poly(vinyl acetal)
resin and a plasticizer,
wherein the first poly(vinyl acetal) resin has a residual
hydroxyl content of less than 20 weight percent,
a second resin layer comprising a second poly(vinyl
acetal) resin and a plasticizer, wherein the second poly(vinyl
acetal) resin has a residual hydroxyl content of at least 22
weight percent and comprises at least 10 weight percent of
residues of at least one aldehyde other than n-butyraldehyde,
based on the total weight of aldehyde residues of the second
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poly(vinyl acetal) resin, wherein the second resin layer has a
glass transition temperature of at least 45°C, and wherein the
glass transition temperature of the second resin layer is at least
5°C higher than the glass transition temperature of at least one
of the first and third resin layers,
a third resin layer comprising a third poly(vinyl acetal)
resin and a plasticizer,
wherein the third poly(vinyl acetal) resin has a residual
hydroxyl content of less than 20 weight percent,
wherein the second resin layer is between and adjacent to
the first and third resin layers.
Appeal Br. 22 (Claims Appendix). Claims 13 and 19 are also independent
claims and similar to claim 1. Claim 13 specifies the second resin has a
residual hydroxyl content of at least 25 wt% and not more than 30 phr of a
plasticizer. Id. at 24. Claim 19 specifies the second resin has a residual
hydroxyl contents of at least 25 weight percent, not more than 25 phr of a
plasticizer, and comprises 10 wt%, and does not require a third resin layer.

REJECTION
The Examiner maintains the rejection of claims 1–5 and 8–20 under
35 U.S.C. § 103 over Lu (US 2016/0159051 A1, pub. June 9, 2016).

ANALYSIS
The Examiner concludes that claims 1–5 and 8–20 are unpatentable
under 35 U.S.C. § 103 over Lu because Lu discloses an interlayer having
first, second, and third resin layers with the second layer sandwiched
between the first and third layers. Final Act. 3. The Examiner finds that Lu’s
first and third resin layers comprise poly(vinyl acetal) resin and a plasticizer
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and have a residual hydroxyl content of 8 to 16 wt%. Id. at 3–4. The
Examiner finds Lu’s second layer comprises poly(vinyl acetal) resin that can
include at least 75 wt% residues of iso-butyraldehyde and the residual
hydroxyl content is at least 2 wt% higher than the first ply(vinyl) acetal resin
and the third poly(vinyl acetal) resin. Id. The Examiner finds the glass
transition temperature of Lu’s second resin layer is at least 26 ºC and at least
3 ºC higher than the glass transition temperature of the first and third resin
layers. Id. at 4. The Examiner finds Lu discloses the plasticizer content is 5
to 120 phr in the first, second, and third resin layers. Id. The Examiner finds
Lu teaches the plasticizer content is higher when the hydroxyl content of the
poly(vinyl acetal) resin is lower, thus, when Lu’s second resin layer has
higher hydroxyl content than the first and third resin layers it also has lower
plasticizer content than the first and third resin layers. Id. The Examiner
determines Appellant’s claimed interlayer would have been obvious in view
of the overlapping ranges that Lu discloses for a multiple layer interlayer. Id.
at 5; Ans. 7.
Appellant argues the claims rejected over Lu as a group. Appeal Br.
10–20. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as
representative of the group and claims 2–5 and 8–20 will stand or fall
together with claim 1.
According to Appellant, the Examiner erred because (1) Lu discloses
very broad ranges for the residual hydroxyl contents, (2) Lu does not
disclose the combination of the claimed hydroxyl level content and
plasticizer level in the second layer or the glass transition temperature, (3)
Lu’s disclosure of a difference between the second layer and the first or third
layers in the glass transition temperature and the residual hydroxyl contents
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teaches away from Appellant’s claimed ranges, (4) Lu’s examples have at
least 38 phr plasticizer and none have a residual hydroxyl content of at least
22 weight percent, (5) the Examiner’s rejection lacks “some articulated
reasoning by the Examiner as to why one would select the features and
properties as claimed.” Appeal Br. 13–20.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). Based on our
review of the arguments and evidence of record, we are not persuaded by
Appellant that the Examiner reversibly erred in rejecting claim 1 over Lu.
We begin our analysis with the following comparison chart that shows
the record supports the Examiner’s finding of overlapping ranges between
claim 1 and Lu’s disclosure. Final Act. 3–4; Lu ¶¶ 11, 19, 24, 27, 29, 30, 36,
38, claim 15.
Resin Layer Component/Property Claim 1 Lu
first hydroxyl content <20 wt% 8–16 wt%
second hydroxyl content >22 wt% 14–45 wt%
second aldehyde other than n-butyraldehyde >10 wt%
75 wt% iso-
butyraldehyde
second glass transition temperature >45ºC >26ºC
second glass transition temperature
>5ºC first
and/or third
layer
>3ºC first and
third layer
third hydroxyl content <20 wt% 8–16 wt%

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Therefore, having identified the pertinent disclosures of Lu and
determining that the claimed multiple layer interlayer is encompassed by
Lu’s disclosure, the Examiner has established a prima facie case of
obviousness of claim 1 over Lu. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (“A prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art.”); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”). Once a prima facie case
of unpatentability has been established, Appellant may introduce evidence
and arguments to counter the prima facie case. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. Oetiker, 977 F.2d at 1445.
We address each of Appellant’s arguments below.
Broad Ranges
Appellant’s argument (Appeal Br. 13) that Lu discloses “very broad
ranges for the residual hydroxyl contents” is not persuasive of error because
the claimed interlayer is encompassed by Lu’s ranges for a multiple layered
interlayer. Therefore, a person having ordinary skill in the art would have a
reasonable expectation of success that an interlayer meeting Lu’s guidance
with respect to each of the three layers composed of poly(vinyl acetal) resin
and plasticizer and their residual hydroxyl content and glass transition
temperature would perform as desired in a safety glass application.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). See
also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 415, and discussed
circumstances in which a patent might be determined to be obvious. In
particular, the Supreme Court emphasized that “the principles laid down in
Graham [v. John Deere Co., 383 U.S. 1 (1966)] reaffirmed the ‘functional
approach’ of Hotchkiss [v. Greenwood, 52 U.S. 248 (1850)],” id., and
reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
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devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. Because the scope of
Lu’s disclosure encompasses the claimed resin layer components as well as
the claimed ranges and Appellant does not adequately explain why it would
have been outside the level of skill of a person having ordinary skill in the
art to optimize Lu’s multiple layer interlayer through routine
experimentation, we are not persuaded the Examiner erred in determining
claim 1 would have been obvious in view of Lu. We note that Appellant
does not direct us to any objective evidence of non-obviousness.
Specific Combination of Ranges
Appellant’s argument (Appeal Br. 15) that Lu does not disclose the
claimed combination of the claimed hydroxyl level content and plasticizer
level in the second layer or the glass transition temperature is not persuasive
of error, because “[a Section 103] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. As discussed
above, the Examiner’s finding that Lu’s disclosure encompasses all of the
claimed components and ranges is supported by the evidence cited in this
Appeal record. The Examiner also finds that Lu discloses when the hydroxyl
content of poly(vinyl acetal) resin is lower, the plasticizer content is higher,
therefore, the second resin layer comprising second poly(vinyl acetal) resin
having higher hydroxyl content than the first and third poly(vinyl acetal)
resins has lower plasticizer content than the first and third resin layers. Ans.
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8. The Examiner’s finding is supported by the record. Lu ¶ 36. Therefore, Lu
not only discloses ranges encompassing the claimed ranges, but also
provides guidance regarding the relative composition of the multiple layers
of the interlayer.
Glass Transition Temperature and Residual Hydroxyl Content
Appellant’s argument (Appeal Br. 14) that Lu’s disclosure of a
difference between the second layer and the first or third layers in the glass
transition temperature and the residual hydroxyl contents teaches away from
Appellant’s claimed ranges is not supported by the record cited in this
Appeal. A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Lu discloses that “[t]he difference in the glass transition
temperature of the first resin layer and the second resin layer . . . can be at
least about 3[ºC].” Lu ¶ 38; Appeal Br. 14. Lu also discloses that the first
resin has “a residual hydroxyl content . . . at least about 2 . . . weight percent
higher or lower than the residual hydroxyl content” of the second resin. Lu
¶ 27; Appeal Br. 14. The fact that Lu discloses a difference between the first
and second resins in both directions does not discourage a person of ordinary
skill from following the direction reflected in claim 1. At most Appellant
identifies instances in Lu’s disclosures that are broader than the claimed
ranges rather than a teaching away from the claimed ranges. Therefore, the
Examiner’s findings that Lu’s ranges encompass the claimed ranges are
supported by the record.
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Lu’s Examples Are Outside of the Claimed Ranges
Appellant’s argument (Appeal Br. 15) that Lu’s examples have at
least 38 phr plasticizer and none have a residual hydroxyl content of at least
22 weight percent is not persuasive of error because, in a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.”). Moreover, “a reference is not limited
to the disclosure of specific working examples.” In re Mills, 470 F.2d 649,
651 (CCPA 1972) (citation omitted).
Articulated Reasoning
Appellant’s argument (Appeal Br. 16) that the Examiner’s rejection
lacks “some articulated reasoning by the Examiner as to why one would
select the features and properties as claimed” is not persuasive of error
because each of the claim elements is not only disclosed in Lu, but falls
within the parameters set forth by Lu. Thus, the obviousness analysis of
claim 1 did not require looking at interrelated teachings of multiple patents,
combining those teachings, and providing reasoning for the combination.
Instead, the Examiner’s determination of claim 1’s obviousness over Lu is
fully supported by Lu’s disclosure itself as the Examiner explains in the
Final Action. Final Act. 3–45; Lu ¶¶ 11, 19, 24, 27, 29, 30, 36, 38, 119,
claim 15.
Summary
Having considered Appellant’s arguments together with the
Examiner’s findings, the evidence of record weighs in favor of the
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Examiner’s conclusion that the multiple layer interlayer recited in claim 1
would have been obvious to one of ordinary skill in the art in view of Lu’s
teachings.
CONCLUSION
We affirm the Examiner’s rejection of claims 1–5 and 8–20 as
obvious under 35 U.S.C. § 103 for the reasons we give above.
DECISION SUMMARY

In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–5, 8–20 103 Lu 1–5, 8–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED